United States Court of Appeals
for the Federal Circuit
______________________
ASPEX EYEWEAR, INC. AND
CONTOUR OPTIK, INC.,
Plaintiffs-Appellants,
v.
ZENNI OPTICAL LLC.,
Defendant-Appellee.
______________________
2012-1318
______________________
Appeal from the United States District Court for the
Southern District of Florida in No. 09-CV-61468, Judge
William J. Zloch.
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Decided: April 19, 2013
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MICHAEL A. NICODEMA, Greenberg, Traurig, LLP, of
Florham Park, New Jersey, argued for the plaintiffs-
appellants.
GUY W. CHAMBERS, Duane Morris, LLP, of San Fran-
cisco, California, argued for the defendant-appellee. With
him on the brief were HARVEY W. GURLAND, JR., J.
RODMAN STEELE, GREGORY M. LEFKOWITZ, and KAREN
CHUANG KLINE; KRISTINA CAGGIANO of Washington, DC.
2 ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC
______________________
Before NEWMAN, PROST, and REYNA, Circuit Judges.
NEWMAN, Circuit Judge.
Contour Optik, Inc., a company of Taiwan, and subli-
censee Aspex Eyewear, Inc. (collectively “Aspex”) sued
Zenni Optical, LLC for infringement of several United
States patents for magnetic clip-on eyewear such as
sunglasses. The district court held that Aspex is collater-
ally estopped from pursuing this suit, based on earlier
litigation between Aspex and Altair Eyewear, Inc. for
infringement of the same patents; decisions reported at
Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 386 F. Supp.
2d 526 (S.D.N.Y. 2005) (Altair I) (claim construction);
Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 485 F. Supp.
2d 310 (S.D.N.Y. 2007) (Altair II) (summary judgment of
non-infringement); and Aspex Eyewear, Inc. v. Altair
Eyewear, Inc., 288 Fed. App’x 697 (Fed. Cir. 2008) (Altair
III) (affirming in part, reversing in part, and remanding).
Aspex argues that collateral estoppel does not apply.
Aspex points out that certain of the patent claims in suit
against Zenni Optical were not included in the Altair
litigation, and that several terms now at issue had not
previously been construed or were incorrectly construed.
On review of the premises, we affirm the district court’s
ruling of collateral estoppel, 1 for there is no material
difference as to the claims now in suit, nor difference
1 Aspex Eyewear, Inc. v. Zenni Optical, LLC, No. 09-
cv-61468 (S.D. Fla. Mar. 21, 2012), ECF No. 195 (Zenni I)
(report and recommendation); Aspex Eyewear, Inc. v.
Zenni Optical, LLC, No. 09-cv-61468 (S.D. Fla. Mar. 30,
2012), ECF No. 206 (Zenni II) (adopting report and rec-
ommendation and granting summary judgment).
ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC 3
between the Altair and Zenni Optical products to which
the claims are applied.
BACKGROUND
The complaint charged Zenni Optical with infringe-
ment of U.S. Patents No. 5,737,054 (the ’054 patent), No.
6,012,811 (the ’811 patent), and No. 6,092,896 (the ’896
patent), all directed to clip-on eyewear in which magnets
secure the bridge portions of the eyewear. The Summary
of the Invention in the ’811 patent describes the general
subject matter of the three patents:
The present invention provides methods and ap-
paratus to easily, firmly and elegantly attach aux-
iliary frames to primary frames, based on
magnetic members at the bridges of frames. The
invention has numerous advantages. For exam-
ple, it creates a very strong support for attaching
auxiliary frames to primary frames, it is relatively
easy to manufacture, it is easier to blend into the
general design of frames, and it makes the auxil-
iary frames easily applicable to primary frames
even with just one hand.
’811 patent col.2 ll.17–25.
The Altair litigation involved the same three patents,
and many of the same claims now in suit. For example,
Aspex asserted Claim 1 of the ’811 patent against Altair,
and again against Zenni Optical:
1. An eyeglass device comprising:
a first frame including
two retaining mechanisms for supporting a
pair of lenses, and defining a frontal plane,
a bridge connecting the two retaining mecha-
nisms and holding the two retaining mecha-
nisms together, and
4 ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC
a first magnetic member at the bridge for
magnetically coupling to another magnetic
member at the bridge of a second frame;
such that when coupled,
the two frames are attached together,
due to the locations of the magnetic members,
one of the frames is restricted from moving
downwards relative to the other frame, and
the two magnetic members are coupled at a
surface that is not parallel to the frontal
phase.
The Altair district court construed “retaining mecha-
nisms” in the ’811 and ’896 patents as requiring support-
ing frames such as rims around the lenses, and construed
“frame” in the ’054 patent as requiring rims around the
lenses. Altair I, 386 F. Supp. 2d at 536, 540. On this
construction the district court granted summary judg-
ment of non-infringement of all three patents, because
“none of [Altair’s] products contain a rim around the
sunglass lenses.” Altair II, 485 F. Supp. 2d at 314–15.
On appeal, the Federal Circuit affirmed that “retain-
ing mechanisms” requires “rims or their equivalents.”
Since all of Altair’s magnetic clip-on sunglasses were
rimless, this court affirmed that the ’811 and ’896 patents
were not infringed. Altair III, 288 Fed. App’x at 704.
However, with respect to the ’054 patent, the Federal
Circuit held that “a ‘frame’ as that term is used in the
’054 patent is not limited to one with rims.” Id. at 706.
This court remanded, but on remand the district court
held that the asserted ’054 claim (only claim 1 was assert-
ed), when construed as unlimited to a frame with rims, is
invalid for obviousness. This court affirmed. Aspex
Eyewear, Inc. v. Altair Eyewear, Inc., 484 Fed. App’x 565
(Fed. Cir. 2012). Aspex does not separately argue the
preclusive effect of this determination.
ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC 5
Applying the Altair rulings to the Zenni issues, the
district court observed that Zenni’s accused rimless mag-
netic clip-on sunglasses are materially indistinguishable
from Altair’s rimless magnetic clip-on sunglasses. Zenni
I, at 21 (“Indeed, Plaintiffs have failed to identify (either
in their written descriptions or at oral argument) any
material difference between the non-infringing Altair . . .
eyewear and the accused Zenni eyewear.”). The district
court held that the Altair decisions settled the question of
whether such eyewear can infringe the ’811 and ’896
patents. Id., at 20–21. Thus the district court held that
collateral estoppel bars this suit against Zenni Optical.
Zenni II, at 2–3. Aspex appeals.
DISCUSSION
Collateral estoppel “precludes a plaintiff from reliti-
gating identical issues by merely switching adversaries”
and precludes a plaintiff “from asserting a claim that the
plaintiff had previously litigated and lost against another
defendant.” Parklane Hosiery Co. v. Shore, 439 U.S. 322,
329 (1979) (internal quotation marks omitted).
A ruling of collateral estoppel receives plenary review
on appeal. Shell Petroleum, Inc. v. United States, 319
F.3d 1334, 1338 (Fed. Cir. 2003). Since the criteria of
collateral estoppel are not unique to patent issues, on
appellate review we are guided by the precedent of the
regional circuit. Dana v. E.S. Originals, Inc., 342 F.3d
1320, 1323 (Fed. Cir. 2003). However, for any aspects
that may have special or unique application to patent
cases, Federal Circuit precedent is applicable. See Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335,
1341 n.1 (Fed. Cir. 2012) (“[T]he question whether a
particular claim in a patent case is the same as or sepa-
rate from another claim has special application to patent
cases, and we therefore apply our own law to that issue.”).
The district court cited the principles of estoppel as
stated by the Eleventh Circuit:
6 ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC
To claim the benefit of collateral estoppel the par-
ty relying on the doctrine must show that: (1) the
issue at stake is identical to the one involved in
the prior proceeding; (2) the issue was actually lit-
igated in the prior proceeding; (3) the determina-
tion of the issue in the prior litigation must have
been ‘a critical and necessary part’ of the judg-
ment in the first action; and (4) the party against
whom collateral estoppel is asserted must have
had a full and fair opportunity to litigate the issue
in the prior proceeding.
Christo v. Padgett, 223 F.3d 1324, 1339 (11th Cir. 2000)
(citations omitted). The district court found that each of
these criteria is met.
Aspex argues that the first Christo criterion is not
met in that “the issue at stake” is not “identical” because
the claim terms that were construed and applied in the
Altair litigation are not the same as the claim terms now
requiring construction. Aspex also argues that the claims
of the ’811 and ’896 patents were not correctly construed
in the Altair litigation, and that on the correct construc-
tion of the new terms, infringement by the Zenni products
could be found. Aspex states that the issues now raised
were not actually litigated and were not part of the prior
judgment, and also that it did not have a full and fair
opportunity to litigate. Thus Aspex argues that collateral
estoppel does not arise, and that it is entitled to trial of
infringement by the Zenni products on the correct claim
construction.
Aspex states that the Zenni infringement turns on the
meaning of the claim terms “primary frame,” “auxiliary
frame,” “first frame,” and “second frame,” and that these
terms were not at issue in the Altair litigation. Aspex
states that if these terms had been construed correctly in
Altair, the ruling in the Altair litigation could have been
ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC 7
different. Thus Aspex argues that the Altair proceeding
does not estop this suit against Zenni.
Zenni responds that the question of estoppel is not
whether the now-asserted claims contain some terms that
were not previously construed, but whether the ’811 and
’896 claims in suit can be asserted against Zenni, for the
Zenni eyewear is indistinguishable from the Altair eye-
wear against which the same patents were previously
litigated to final judgment of non-infringement. Zenni
states that there are no material differences between
Altair’s magnetic rimless sunglasses and Zenni’s magnetic
rimless sunglasses; indeed, no material differences are
identified in Aspex’s briefs. Zenni states that Aspex had a
full and fair opportunity in Altair to litigate infringement
of the same patents as to the same products, and thus
that Aspex is collaterally estopped from relitigation. In
response Aspex states that it did not have a full and fair
opportunity to litigate these new issues of claim construc-
tion and infringement, and that these issues were not a
critical and necessary part of the prior judgment.
Aspex argues that the issues now at stake are differ-
ent because some of the claims of the ’896 patent that are
asserted against Zenni were not asserted against Altair,
although several claims were commonly asserted. The
common claims are Claim 1 of the ’054 patent, which is
not at issue on appeal; Claims 1, 22, and 31 of the ’811
patent; and Claims 13, 15, and 19 of the ’896 patent.
Aspex states that the newly-asserted claims contain
limitations that were not previously construed and ap-
plied. However, every claim asserted against Zenni
contains the same “retaining mechanism” limitation, in
the same context, that the Federal Circuit in Altair III
found dispositive of non-infringement. The Zenni and
Altair products are materially identical. In such circum-
stances, the assertion of different claims in a subsequent
suit does not create a new “issue” to defeat preclusion.
See Bourns, Inc. v. United States, 537 F.2d 486, 491 (Ct.
8 ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC
Cl. 1976) (“It is the identity of the issues litigated and
decided, and which were essential to the prior judgment,
that determines whether the estoppel should be applied . .
. . There is no reason to employ a different approach in a
patent context by looking to the claims litigated instead of
to the issues that were decided.”).
No changed circumstances are here shown, nor any
new evidence nor materially different argument that was
unavailable to Aspex in the Altair litigation. The Aspex
claims now in suit contain the same “retaining mecha-
nism” term that was construed in Altair as requiring
rims. This construction is determinative of non-
infringement by the Zenni eyewear; it is irrelevant
whether the additional claims now in suit contain addi-
tional terms that were not previously construed. See
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1311–12 (Fed. Cir.
2010) (applying collateral estoppel when “the infringe-
ment issue in [the second] case is identical to the one in
[the first case],” for the “differences in the facts . . . do not
change the fact that the modified rig does not infringe”);
cf. Nystrom v. Trex Co., 580 F.3d 1281, 1285–86 (Fed. Cir.
2009) (res judicata bars a second attempt to litigate “the
same issues” if “the accused device of the second suit
remains unchanged with respect to the corresponding
claim limitations at issue in the first suit”). A full and
fair opportunity to litigate is the touchstone of any preclu-
sion analysis. Taylor v. Sturgell, 553 U.S. 880, 892
(2008). The “desire not to deprive a litigant of an ade-
quate day in court” is balanced against the “desire to
prevent repetitious litigation of what is essentially the
same dispute.” In re Freeman, 30 F.3d 1459, 1465 (Fed.
Cir. 1994).
The selection of additional claims for litigation and
additional terms for “construction” does not override the
holding of non-infringement. In determining whether
Aspex had a full and fair opportunity to litigate the dis-
ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC 9
positive claim limitations in the prior proceeding, “[i]t is
the issues litigated, not the specific claims around which
the issues were framed, that is determinative. Only by
focusing on the issues, and examining the substance of
those issues, can the second court ascertain whether the
patentee had the requisite full and fair chance to litigate .
. . in the first suit.” Westwood Chem., Inc. v. United
States, 525 F.2d 1367, 1372 (Ct. Cl. 1975); see Marrese v.
Am. Acad. of Orthopaedic Surgeons, 470 U.S. 373, 390–91
(1985) (“[A] party is precluded from asserting a claim that
he had a ‘full and fair opportunity’ to litigate in a prior
action.”).
The record shows that Aspex fully litigated the mean-
ing of the term “retaining mechanism” in the first suit,
and that it was finally adjudicated that “retaining mech-
anism” as used in these patents requires a rim around the
lens, which resulted in a finding of non-infringement.
Although Aspex argues that the terms “primary frame,”
“auxiliary frame,” “first frame,” and “second frame” were
not at issue and therefore were not construed in the Altair
litigation, the issues of infringement are not distin-
guished. See Reese v. Verizon Cal., Inc., No. 2012-1048,
2012 WL 6634227, at *2 (Fed. Cir. Dec. 21, 2012) (collat-
eral estoppel applies when the same technology is said to
infringe the same patent); Del Mar Avionics, Inc. v. Quin-
ton Instrument Co., 836 F.2d 1320, 1323 (Fed. Cir. 1987)
(“The prior determination of certain issues, including the
issues of claim construction and of infringement by [one
model] and non-infringement by [another model], bars
judicial redetermination of those issues.”).
The district court correctly defined the issue as in-
fringement by magnetic rimless clip-on eyewear in view of
the final construction of “retaining mechanisms” as re-
quiring rims. The court correctly found that Aspex had a
full and fair opportunity to litigate this issue. We thus
affirm that Aspex is collaterally estopped from relitigating
10 ASPEX EYEWEAR, INC. v. ZENNI OPTICAL LLC
infringement of these patents against these Zenni prod-
ucts.
AFFIRMED